CWS/4BIS/3 Annex (In Arabic)

CWS/4BIS/3

Annex

STANDARD ST.14

RECOMMENDATION FOR THE INCLUSION OF REFERENCES
CITED IN PATENT DOCUMENTS

Editorial Note prepared by the InternationalBureau

Articles published in scientific and technical journals often contain a certain number of references to earlier publications. Patent applications also very often contain (e.g., in the descriptions of the inventions) references to earlier patents or patent applications, or other industrial property rights. In the course of the procedure for obtaining a patent, patent examiners cite one or several patent documents or other documents which describe similar or closely related technical solutions to the one described in a patent application being examined, in order to illustrate the prior art.

Some industrial property offices, but not all of them, bring these cited references to the attention of the general public, by including them in a published patent document. The present Recommendation is intended to generalize the inclusion in patent documents of “reference(s) cited” during the patent examination procedure, to standardize the way in which the said references should be presented in the patent document and to recommend a preferred place, where the “reference(s) cited” should appear.

STANDARD ST.14

RECOMMENDATION FOR THE INCLUSION OF REFERENCES
CITED IN PATENT DOCUMENTS

Revision adopted by the SCIT Standards and Documentation Working Group
at its ninth session on February 21, 2008

Proposal presented by the ST.14 Task Force for consideration and adoption at the CWS/4BIS

INTRODUCTION

Applications for patents are examined by a governmental authority or intergovernmental authority which, as a rule, is an industrial property office. A patent for invention is granted if the application complies with the formal requirements and, depending on whether and to what extent an “examination as to substance” is carried out, if the invention fulfills the substantive requirements of the respective patent law.

When patent applications are examined or search reports are established therefor, a certain number of patent documents and other documents might be cited as references to illustrate the prior art by the industrial property office (including a regional Office, and an International Searching Authority under the PCT).

DEFINITIONS

For the purposes of this Recommendation, the term “patents” includes such industrial property rights as patents for inventions, plant patents, design patents, inventors’ certificates, utility certificates, utility models, patents of addition, inventors’ certificates of addition, and utility certificates of addition.

For the purposes of this Recommendation, the expression “patent applications” or “applications for patents” includes applications for patents for inventions, plant patents, design patents, inventors’ certificates, utility certificates, utility models, patents of addition, inventors’ certificates of addition, and utility certificates of addition.

For the purposes of this Recommendation, the expression “patent documents” includes patents for inventions, plant patents, design patents, inventors’ certificates, utility certificates, utility models, patents of addition, inventors’ certificates of addition, utility certificates of addition, and published applications therefor.

REFERENCES

References to the following Standards are of relevance to this Recommendation:

WIPO Standard ST.1 Recommendation Concerning the Minimum Data Elements Required to Uniquely Identify a Patent Document;

WIPO Standard ST.2 Standard Manner for Designating Calendar Dates by Using the Gregorian Calendar;

WIPO Standard ST.3 Recommended Standard on Two-Letter Codes for the Representation of States, Other Entities and Intergovernmental Organizations;

WIPO Standard ST.9 Recommendation Concerning Bibliographic Data on and Relating to Patents and SPCs;

WIPO Standard ST.13 Recommendation for the Numbering of Applications for Industrial Property Rights (IPRs);

WIPO Standard ST.16 Recommended Standard Code for the Identification of Different Kinds of Patent Documents;

WIPO Standard ST.20 Recommendations for the Preparation of Name Indexes to Patent Documents;

International Standard ISO 4:1997 “Information and Documentation – Rules for the abbreviation of title words and titles of publications”;

International Standard ISO 690:2010 1987 “Documentation – Bibliographic references – Content, form and structure”; “Information and documentation – Guidelines for bibliographic references and citations to information resources”

International Standard ISO 690-2:1997 “Information and documentation – Bibliographic references – Part 2: Electronic documents or parts thereof”;

International Standard ISO 999:1996 “Information and documentation – Guidelines for the content, organization and presentation of indexes”.

RECOMMENDATION

It is recommended that industrial property offices should include in their granted patents and in their published patent applications all relevant references cited in the course of a search or examination procedure.

It is recommended that the “List of references cited” be identified by INID code(56).

It is recommended that the “List of references cited” appear either

(a) on the first page of the patent document or

(b) in a search report attached to the patent document.

It is recommended that if the “List of references cited” appears in a search report attached to the patent document, (e.g., under the PCT procedure) this should be indicated on the first page of the patent document.

It is recommended that the documents in the “List of references cited” be organized in a sequence suitable to the users’ needs, this sequence being clearly illustrated in the presentation of the said list. The following is an example of a sequence of documents cited:

(a) domestic patent documents;

(b) foreign patent documents;

In search reports, however, the documents may be cited in the order of their pertinence.

Identification of any document or announcement cited, and available in paper form or in a page-oriented presentation mode (e.g., facsimile, microform, etc.) shall be made by indicating the following elements in the order in which they are listed:

(a) In the case of a patent document:

(i) the industrial property office that issued the document, by the two-letter code (WIPO StandardST.3);

(ii) the number of the document as given to it by the industrial property office that issued it (for Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document);

(iii) the kind of document, by the appropriate symbols as indicated on the document under WIPO Standard ST.16 or, if not indicated on that document, as provided in that Standard, if possible;

(iv) (1)the name of the patentee or applicant (in capital letters and, where appropriate, abbreviated)(3);

(v) (2)the date of publication of the cited patent document (using four digits for a year designation according to the Gregorian Calendar) or, in case of a corrected patent document, the date of issuance of the corrected patent document as referred to under INID code(48) of WIPO StandardST.9 and, if provided on the document, the supplementary correction code as referred to under INID code(15);

(vi) (1)where multiple renderings of the same document are published (e.g., PDF and HTML), an indication of the location and format (e.g., PDF) of the cited document;

(vii) (1)paragraph numbers, sentence numbers and line numbers to describe the specific location of the cited material within a document if they are available;

(viii) (1)claim numbers, figure numbers, chemical formula numbers, mathematical formula numbers, table heading numbers, gene sequence numbers, and computer program listing numbers if available;

(ix) (1)if no paragraph numbers exist, or if the paragraph is long, use page numbers, column numbers, and line numbers (if available) to describe the specific location of the cited material within a document;

(x) (1)specific headings within the document structure such as Best Mode of Performing the Invention or Industrial Applicability can be indicated if page, paragraph, and line numbers are not available;

(xi) (1)specific passages of the text can be indicated if the format of the document includes pagination or an equivalent internal referencing system, or by the first and last words.

The following examples illustrate the citation of a patent document according to paragraph (a), above:

Example 1: JP 10-105775 A (NCR INTERNATIONAL INC) 24 April 1998, paragraphs [0026] to [0030].

Example 2: DE 3744403 A1 (JOSEK, A) 1991.08.29, page 1, abstract.

Example 3: SE 504901 C2 (SWEP INTERNATIONAL AB) 1997-05-26, claim 1.

Example 4: US 5635683 A (MCDERMOTT, RM et al.) June 3, 1997, column 7, lines 21 to 40.

Example 5: ES 2156718 A1 (AGQ SL) 1 July 2001, the whole document.

Example 6: WO97/28071 A1 corrected version (GENERAL SIGNAL CORP) available 1998-05-07, page 3 lines 20-28.

Example 7: WO 2007/077970 A1 (MEIJI DAIRIES CORP) 2007.07.12, paragraph [0019] from “[14] Another aspect … assumes 30%-60%”.

(b) In the case of a published intellectual property office document or announcement, e.g., registered industrial design, registered trademark, published pending trademark and registered copyright documents, not specifically provided for elsewhere under paragraph 142:

(i) the intellectual property office that issued the document or announcement, by the two-letter code (WIPO StandardST.3);

(ii) the serial number of the application or registration or the number of the document or announcement as given to it by the intellectual property office that issued it;

(iii) the type of intellectual property office document or announcement (e.g., registered industrial design, trademark registration, trademark application, copyright registration, etc.);

(iv) (1)the name of the applicant or owner (in capital letters and, where appropriate, abbreviated);(3)

(v) where applicable, the title of the gazette in which the application or registration was announced and the issue designation of the gazette;

(vi) the date of publication using four digits for the year designation (where year, month and day are available, the provisions of WIPO Standard ST.2 should be applied);

(vii) (1)where applicable, the location of relevant passages or figures within the document or announcement;

(viii) if considered necessary, the standard identifier and the number assigned to the item, e.g.,ISSN0250-7730.

The following examples illustrate the citation of a document or announcement according to paragraph (b), above:

Example 1: WO DM/032099, Industrial Design (POWER-PACKER EUROPA B.V.) 1995-04-28, International Designs Bulletin February 1995, No. 2, pages 752 and 753, figures 1.1 and 1.3, ISSN 0250-7730.

Example 2: DE M 94 01 995, Geschmacksmuster, Geschmacksmusterblatt, Heft 15, 1994.08.10, S. 3810.

Example 3: US TXu-499-733, copyright registration, ELSTON, William J, 1991.12.16.

Example 4: ES M 0279288, trademark registration (SUDNIF SA) 2001-05-16.

(i) the name of the author (in capital letters)(3); in the case of a contribution, the name of the author of the contribution;. In case of multiple authors, preferably, all names should be entered, alternatively the name of the first author should be entered followed by “et al.”;

(ii) in the case of a contribution, the title of the contribution followed by “In:”;

(iii) the title of the monograph; in the case of a contribution, the designation of the editorship;

(iv) in the case of conference proceedings, the conference title, date, number, place (if available);

(v) the number of the edition;

(vi) (1)the place of publication and the name of the publisher (where only the location of the publisher appears on the monograph, then that location shall be indicated as the place of publication; in the case of company publications, the name and postal address of the company);

(vii) the year of publication, by four digits(4);

(viii) if applicableavailable, the standard identifier and number assigned to the item, e.g., ISBN276540537-9, ISSN 1045-1064. It should be noted that these numbers may differ for the same title in the print and electronic versions;

(ix) (1)the location within the monograph by indicating the pages, columns, lines or paragraph numbers where the relevant passages appear, or the relevant figures of the drawings (if where applicable).

The following examples illustrate the citation of a monograph (Example 1), as well as of published conference proceedings (Example 2), according to paragraph (c), above:

Example 1: WALTON, Herrmann. Microwave Quantum Theory. London: Sweet and Maxwell, 1973, Vol.2,
ISBN 5-1234-5678-9, pages 138 to 192, especially pages 146 to 148.

Example 2: SMITH et al. ‘Digital demodulator for electrical impedance imaging’. In: IEEE Engineering in Medicine & Biology Society, 11th Annual Conference. Edited by Y. Kim et al. New York: IEEE, 1989, Vol.6, p. 1744-5.

(d) In the case of an article published in a periodical or other serial publication:

(i) the name of the author (in capital letters)(3);. In case of multiple authors, preferably, all names should be entered, alternatively the name of the first author should be entered followed by “et al.”;

(ii) the title of the article (where appropriate, abbreviated or truncated) in the periodical or other serial publication;

(iii) the title of the periodical or other serial publication (abbreviations conforming to generally recognized international practice may be used; see "PCT Minimum Documentation - List ofPeriodicals", Part 4);